DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
An amendment, filed 7/23/2026, is acknowledged. Claims 1, 8, 11-13, and 16-17 are amended; claims 21-24 are newly added; claims 2-7, 9-10, 15, and 18 are canceled; Claims 1, 8, 11-14, 16-17, and 19-24 are currently pending, claims 11-14 and 19-20 are withdrawn.
The rejection of claims 2-4, 8, and 16-17 under 35 U.S.C. 112(b) and claims 4 and 8 under 35 U.S.C. 112(d) are withdrawn in view of Applicant’s amendments to the claims.
Priority
Receipt is acknowledged of an amended Application data sheet amending application 20210360536.7 to 202110360536.4, which corresponds with the filed certified copy.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 8, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kohsaka et al. (US 11066716).
With respect to Claims 1 and 8, the claim recites the limitation “optionally one or two of Cr, Mo and V,” “optionally one or two of Nb and V,” and “optionally one or two of Mo and V.” These limitations are interpreted such that the claimed steel may comprise none, one or two of the recited elements.
Kohsaka teaches a steel having a tensile strength of 900 MPa or more, the steel having a microstructure comprising, by area%, 30% or less ferrite and 70% or more tempered martensite, the martensite having an average grain size of 3.5 microns or less, and thus, is deemed to teach a dual-phase steel with uniformly distributed ferrite and martensitic dual-phase structure having an overall grain size overlapping the instantly claimed range. (col. 3, ln. 1-47; col. 7, ln. 44 to col. 8, ln. 58). Furthermore, it is noted that as the reference teaches a steel that may comprise nearly all martensitic phase, the disclosed martensite average grain size may represent the overall average grain size and the reference teaches a method of making where no preferential or non-uniform microstructural phase transformations take place and therefore, is deemed to teach a uniform distribution of the dual phases.
The reference also teaches wherein the dual-phase steel may be a hot-galvanized dual-phase steel. (col. 1, ln. 38-47, col. 4, ln. 46 to col. 7, ln. 44). Kohsaka teaches that the dual-phase steel has a composition, in mass%, as follows (col. 3, ln. 1-47):
Claims 1 and 8 (1)
Claims 1 and 8 (2)
Claims 1 and 8 (3)
Kohsaka
C
0.05-0.12
0.05-0.10
0.10-0.17
0.07-0.20
Si
0.1-0.5
0.1-0.5
0.2-0.7
0.6-1.65
Mn
1.4-2.2
1.6-2.5
1.8-2.8
1.8-3.5
P
≤ 0.015
≤ 0.015
≤ 0.02
≤ 0.05
S
≤ 0.003
≤ 0.003
≤ 0.005
≤ 0.005
B
-
-
0.002-0.005
Optionally, 0.0001-0.005
Al
0.02-0.05
0.02-0.05
0.02-0.05
≤ 0.08
Nb
0.02-0.04
Optional**
0.02-0.07
Optionally, 0.001-0.3
Ti
0.03-0.05
0.01-0.05**
0.02-0.07
Optionally, 0.001-0.3
Cr
Optional*
0.2-0.6**
0.3-0.9
Optionally,0.001-1.0
Mo
Optional*
0.1-0.4**
Optional**
Optionally, 0.001-1.0
V
Optional, ≤ 0.055*
Optional, ≤ 0.055**
Optional, ≤ 0.055**
Optionally, 0.001-1.0
Fe
Balance with unavoidable impurities
Balance with unavoidable impurities
Balance with unavoidable impurities
Balance with inevitable impurities
* Cr+Mo+Ti+Nb+V ≤ 0.5
** Cr+Mo+Ti+Nb+V ≤ 1.1
Compositional ranges including zero are interpreted as optional elements. Thus, Kohsaka teaches a dual-phase steel with compositional ranges overlapping each of the instantly required ranges of compositions (3), including the relationship of Cr+Mo+Ti+Nb+V.
Kohsaka teaches wherein the steel may comprise a tensile strength of 900-1300 MPa, yield strength of 600-1100 MPa, and elongation of 9-25%. (col. 10, ln. 6-25). The reference teaches a dual-phase steel with tensile strength, yield strength, and elongation overlapping the instantly claimed ranges of composition (3) and thus, further teaches a product of strength and elongation overlapping the claimed range.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping compositional, grain size, and mechanical property ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 21 and 24, Kohsaka teaches a dual-phase steel and hot galvanized dual phase steel that may comprise substantially all martensitic phase with a minor balance ferrite, wherein the martensitic phase has an average grain size of 5 microns or less, for example, 3 microns or less, and thus, teaches a dual-phase steel with an average grain size overlapping the instantly claimed range. (col. 7, ln. 44 to col. 8, ln. 58; rejection of claim 1). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 22-23, Kohsaka teaches a dual-phase steel and hot galvanized dual phase steel that exhibits a tensile strength of 900-1300 MPa, yield strength of 600-1100 MPa, and elongation of 9-25%. (col. 10, ln. 6-25). The reference therefore teaches a tensile strength and yield strength overlapping the instantly claimed ranges of claims 22-23 for composition (3)/(iii) and an elongation deemed sufficiently close to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
Claim(s) 1, 8, 16-17, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2017/0137906) in view of Kimura (US 2017/0152580).
With respect to Claims 1 and 8, the claim recites the limitation “optionally one or two of Cr, Mo and V,” “optionally one or two of Nb and V,” and “optionally one or two of Mo and V.” These limitations are interpreted such that the claimed steel may comprise none, one or two of the recited elements.
Fan teaches a high strength steel, the steel having a microstructure comprising, by surface fraction/area%, 50-95% martensite and 5-50% ferrite, wherein the ferrite has a grain size below 10 microns. (para. 8-28). The reference also teaches wherein the dual-phase steel may be a hot-galvanized dual-phase steel. (para. 15, 67).
Fan teaches that the dual-phase steel has a composition, in mass%, as follows (para. 15-28):
Claims 1 and 8 (1)
Claims 1 and 8 (2)
Claims 1 and 8 (3)
Fan
C
0.05-0.12
0.05-0.10
0.10-0.17
0.05-0.15
Si
0.1-0.5
0.1-0.5
0.2-0.7
0.3-1.5
Mn
1.4-2.2
1.6-2.5
1.8-2.8
2.0-3.0
P
≤ 0.015
≤ 0.015
≤ 0.02
≤ 0.05
S
≤ 0.003
≤ 0.003
≤ 0.005
≤ 0.01
B
-
-
0.002-0.005
0.0001-0.0025
Al
0.02-0.05
0.02-0.05
0.02-0.05
≤ 0.1
Nb
0.02-0.04
Optional**
0.02-0.07
0.01-0.05
Ti
0.03-0.05
0.01-0.05**
0.02-0.07
≤ 0.5
Cr
Optional*
0.2-0.6**
0.3-0.9
0.1-1 total of Cr+Mo
Mo
Optional*
0.1-0.4**
Optional**
0.1-1 total of Cr+Mo
V
Optional, ≤ 0.055*
Optional, ≤ 0.055**
Optional, ≤ 0.055**
≤ 0.01
Fe
Balance with unavoidable impurities
Balance with unavoidable impurities
Balance with unavoidable impurities
Balance with inevitable impurities
* Cr+Mo+Ti+Nb+V ≤ 0.5
** Cr+Mo+Ti+Nb+V ≤ 1.1
Compositional ranges including zero are interpreted as optional elements. Thus, Fan teaches a dual-phase steel with compositional ranges overlapping each of the instantly required ranges of compositions (1), (2) and (3), including the relationships of Cr+Mo+Ti+Nb+V.
Fan teaches wherein the steel preferably comprises a tensile strength of 980 MPa or more including examples up to 1357 MPa, yield strength of 500 MPa or more including examples ranging from 596 to 960 MPa, and elongation of 8% or more including examples ranging from 8.2-13.8%, and thus, teaches tensile strength, yield strength, and elongation ranges overlapping those of compositions (1), (2) and (3). (para. 15; Table 5). The reference teaches a dual-phase steel with tensile strength, yield strength, and elongation overlapping the instantly claimed ranges of composition (1), (2) and (3) and thus, further teaches a product of strength and elongation overlapping the claimed ranges. In addition, while Fan is silent as to a stain hardening index n90 value, as the reference teaches a dual-phase steel and hot-galvanized dual phase steel with substantially the same composition, structure, and mechanical properties (see above) it would necessarily be expected to result in the same strain hardening index n90 value. See MPEP 2112.01.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping compositional and mechanical property ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, Fan teaches wherein the ferrite has a grain size of 10 microns or less, but is silent as to the overall average grain size of the steel.
Kimura teaches a high strength dual-phase steel with compositional ranges substantially overlapping those of Fan and the instant claims, the steel having a microstructure comprising, by area%, 10-60% ferrite and 40-90% martensite, the ferrite having an average grain size of preferably 5 microns or less and martensite having an average grain size of 5 microns or less, wherein the steel has homogeneous mechanical properties and the composition and/or method of making is controlled to avoid inhomogenous (i.e. non-uniform) microstructure distribution. (para. 2, 13, 18, 23-56, 66-72, 81, 90-105). Thus, Kimura a dual-phase steel with homogenous (i.e. uniformly) distributed ferrite and martensitic dual-phase structure having an overall grain size overlapping the instantly claimed range. The reference also teaches wherein the dual-phase steel may be a hot-galvanized dual-phase steel. (para. 128-132).
Accordingly, Fan and Kimura are both drawn to ferrite-martensite dual phase steels, including hot galvanized dual-phase steels, wherein the steels are drawn to high strength and fine ferrite grain size. It would have been obvious to one of ordinary skill in the art to modify the dual-phase steel and hot-galvanized dual-phase steel of Fan, to comprise a microstructure comprising uniformly distributed ferrite and martensite wherein the ferrite comprises an average grain size of 5 microns or less and the martensite comprises an average grain size of 5 microns or less, as taught by Kimura, in order to obtain a high strength steel with, for example, improved stretch flangeability and/or improved surface appearance. (see, e.g., Kimura para. 21, 41). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping average grain size ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 16-17, Fan teaches compositional ranges overlapping those of steels (1), (2) and (3) as recited in claims 16 and 17, respectively. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 21 and 24, Fan in view of Kimura teach a dual-phase steel and hot-galvanized dual-phase steel with an average grain size overlapping the instantly claimed range. (see rejection of claims 1 and 8 above). In particular, Fan in view of Kimura teach a dual-phase steel with a primary martensite phase and secondary ferrite phase, wherein the ferrite has an average grain size of 5 microns or less and the martensite has an average grain size of 5 microns or less, preferably 2 microns or less, and thus, the overall average grain size of the steel of Fan in view of Kimura overlaps the instantly claimed range. (Kimura, para. 69-72). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 22-23, Fan teaches wherein the steel preferably comprises a tensile strength of 980 MPa or more including examples up to 1357 MPa, yield strength of 500 MPa or more including examples ranging from 596 to 960 MPa, and elongation of 8% or more including examples ranging from 8.2-13.8%, and thus, teaches tensile strength, yield strength, and elongation ranges overlapping those of compositions (1), (2) and (3). (para. 15; Table 5). The reference teaches a dual-phase steel with tensile strength, yield strength, and elongation overlapping the instantly claimed ranges and thus, further teaches a product of strength and elongation overlapping the claimed ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 7/23/2026, with respect to the rejections under 35 U.S.C. 102(a)(1) and 103 over Kohsaka et al. (JPWO2016/194272) have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kohsaka et al. (US 11066716) and over Fan et al. (US 2017/0137906) in view of Kimura (US 2017/0152580), as detailed above.
Additionally, Applicant’s arguments with respect to the nonstatutory double patenting rejections over US Patent Nos. 12259124, 12359273, 12116647, and 11339451 and over US Application Nos. 17/927771 and 17/927781 have been fully considered are persuasive in view of Applicant’s amendments to the claims. Therefore, the rejections are withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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